Attorneys for PlaintiffVisto Corporation(Additional counsel listed on signature pages)

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

Martin C. RobsonTexas State Bar No. 24004892

mrobson@mckoolsmith.comMcKoOL SMITH, P.C.300 Crescent Court, Suite 1500Dallas, Texas 75201Telephone: (214) 978-4000Telecopier: (214) 978-4044

Steven J. PollingerTexas State Bar No. 24011919

spo llinger@mckoolsmith.comGeoffrey L. SmithTexas State Bar No. 24041939

gsmith@mckoolsmith.comMcKoOL SMITH, P.c.300 West Sixth Street, Suite 1700Austin, Texas 78701Telephone: (512) 692-8702Telecopier: (512) 692-8744

Case No. CV -08-80031-JSW (JL)

Date: April 23, 2008Time: 9:30 a.m.Judge: Magistrate Judge Larson

Court of Original Jurisdiction:Civil Action No. 2-06-CV-181-TWJ(CE)United States District Court for the EasternDistrict of Texas - Marshall Division

VISTO'S OPPOSITION TO GOOGLE'SMOTION TO QUASH SUBPOENA, OR INTHE ALTERNATIVE, FOR PROTECTIVEORDER; VISTO'S CROSS-MOTION TOCOMPEL; MEMORANDUM OF POINTSAND AUTHORITIES [REDACTED]

RESEARCH IN MOTION LIMITED, and,RESEARCH IN MOTIONCQRPORA TION

v.

Defendants and Counterclaim-Plaintiffs.

VIS TO CORPORATION,

Plaintiff and Counterclaim-Defendant,

2

345678910~

11IW

:';

~

12

= Z

13

t::~~ ..~~.•t .

14=·S

= =:iIi: ••••~~~15

""Z<=r;: 16'" IW..

f 17~18

19202122232425262728

Visto Corporation v. Research in Motion Limited Doc. 21

Dockets.Justia.com

IV . CONCLUSION 16

III. ARGUMENT 6

I. INTRODUCTION 1

II. FACTUAL BACKGROUND 2

2

345678910z

11••• II'~

~12

<. 13~~a = !:Z~•. 14

,Q •

==3= 15 ••~I.I~ 15\.;I •• := -~'""zQ;;. 16z II'...== 17

c.<

1819202122232425262728

TABLE OF CONTENTS

A. The Underlying Lawsuit. ~ 2

B. RIM Tells Visto That Certain Accused InstrumentalitiesAre Supported By Google's Email Services 3

C. Visto Serves Subpoena on Google 3

D. Google Refuses to Comply with the Subpoenas .4

A. The Federal Rules Allow Visto to Seek All RelevantInformation 7

B. The Information Visto Seeks Is Relevant to the UnderlyingLawsuit. 8

C. Microsoft, AOL, and Yahoo Have Complied With SimilarSubpoenas from Visto 8

D. The Information Visto Seeks is Uniquely Available fromGoogle 9

E. Visto Minimized the Burden on Google by NarrowlyTailoring the Information it Seeks 12

F. Google Cannot Meet Its Burden to Justify WithholdingInformation Responsive to the Subpoenas 12

1. Google's Objections that the Document Requestsand Deposition Topics are Unduly Burdensome,Overly Broad, Vague and Ambiguous AreUnfounded 13

2.. Google Cannot Avoid Producing DocumentsMerely by Alleging the Existence of Proprietaryand/or Confidential Information in the ResponsiveDocuments 14

2

345678910'"

•.. 11~ ~

~ 12~

= zp.,,; 13- !=

~:s ~rIJ_.•r . 14- - ~ ! =::oI:8~~~= 15""'z "~'"~ 16'" "===-~ 17

1819202122232425262728

T ABLE OF AUTHORITIES

Page(s)CASES

Coker v. Duke & Co.,177 F.R.D. 682 (M.D. Ala. 1998) 13

Cornell Research Foundation, Inc. v. Hewlett-Packard Co.,223 F.R.D. 55 (N.D.N.Y. 2003) 7,8,9

Culinary Foods v. Raychem Corp.,151 F.R.D. 297 (N.D. Ill. 1993) 14

Del Campo v. Kennedy,236 F.R.D. 454 (N.D. Cal. 2006) 6

Electro Scientific Indus., Inc. v. Dynamic Details, Inc.,307 F.3d 1343 (Fed. Cir. 2002) 7

Heat and Control Inc. v. Hester Indus.,785 F.2d 1017 (Fed. Cir. 1986) 6

Mead Corp. v. Riverwood Natural Resources Corp.,145 F.R.D. 512 (D. Minn. 1992) 12

Oppenheimer Fund Inc. v. Sanders,437 U.S. 340 (1978) 7

Tantivity Communications, Inc. v. Lucent Technologies, Inc.,No. 2:04-CY -79,2005 U.S. Dist. LEXIS 29981 (E.D. Tex. Nov. 1,2005) 11

THK Am. v. NSK Co.,157 F.R.D. 637 (N.D. Ill. 1993) 14

Truswall Sys. Corp. v. Hydro Air Eng 'g Inc.,813 F.2d 1207 (Fed. Cir. 1987) 7

Visto Corporation. v. Research in Motion Limited and Research in Motion Corporation,C.A. No. 2-06-CY -181- TJW (CE) 2

OTHER AUTHORITIES

FED. R. CIV. P. 26(b)( 1) 6, 7

FED. R. CIV. P. 26(c)(7) 14

Memorandum of Points and Authorities in Support of Vis to's Opposition to Google's

Motion to Quash Subpoena, or in the Alternative for Protective Order, and Visto's

Cross-Motion to Compel Google to Comply with Third-Party SubpoenaDallas 252930v6

Page ii

2

345678910z

•• 11;0; i

E12

~ .- z

§~~13"" :s

rIl •.q; . 14==~~~~:1~=

15""z =;'Ii101 16•..

~~

17

1819202122232425262728

FED. R. CIV. P. 45(c)(3)(B)(i) 14

Federal Rule of Civil Procedure 30(a) 6, 7

Federal Rules of Civil Procedure 37 and 45 1

Local Rule 37-2 4

Rule 30(b)( 1) · 10

Rule 3O(b)(6) 10

Memorandum of Points and Authorities in Support of Vis to's Opposition to Google's

Motion to Quash Subpoena, or in the Alternative for Protective Order, and Visto's

Cross-Motion to Compel Google to Comply with Third-Party Subpoenan~II~< 7~7Q'OVh

Page iii

with both Microsoft and AOL to use a declaration (agreed upon by RIM) in lieu of a deposition

such as Microsoft, AOL, Yahoo and Google. Accordingly, Visto served third-party subpoenas

in support hereof, respectfully states as follows:

declaration, and Visto believes that a similar resolution will be shortly reached with Yahoo.

I. INTRODUCTION

Google initially indicated a willingness to similarly cooperate, and engaged Visto's

Visto is the plaintiff in a patent infringement lawsuit against Research In Motion ("RIM")

Pursuant to Federal Rules of Civil Procedure 37 and 45, Visto Corporation ("Visto") files

refused to cooperate. Google is the only third party that has filed a motion to quash,

discussions and instead filed the present motion to quash. Google is the only third party that has

counsel in several conversations in this regard. However, Google then abruptly halted the

MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OFVISTO'S OPPOSITION TO GOOGLE'S MOTION TO QUASH SUBPOENA,

OR IN THE AL TERNA TIVE, FOR PROTECTIVE ORDER, AND VISTO'S CROSS­MOTION TO COMPEL GOOGLE TO COMPLY WITH THIRD-PARTY SUBPOENA

and document production. Visto is similarly working in a cooperative manner with Yahoo on a

third parties-except for Google-cooperated. Indeed, Visto was able to reach an agreement

information sought and to avoid a deposition or extensive document production. Each of the

obtain from RIM. Visto worked diligently with each of the third parties, to narrowly tailor the

on Microsoft, AOL, Yahoo, and Google to obtain relevant information that it was unable to

patent lawsuit concerns, among other things, RIM's services for obtaining emails on

Order, and Visto's Cross-Motion to Compel Google to Comply with Third-Party Subpoena, and

smartphones, e.g., BlackBerries. RIM's services work with third-party internet email providers

currently pending in the United States District Court for the Eastern District of Texas. The

this Opposition to Google's Motion to Quash Subpoena, or in the Alternative, For Protective

2

345678910'"

11•• ~!:i~

12~. 13= ~•• i: ~~:s~ 14

rIJ_

~tioi= == ~==~~\.I 15\,1-= -~""z=:;. 16'" ~...f 17~

1819202122232425262728

Memorandum of Points and Authorities in Support of Vis to's Opposition to Google's

Motion to Quash Subpoena, or in the Alternative for Protective Order, and Visto'srro«-Mnlinn In Cnmnel GnO!!le to ComDlv with Third-Partv SubDoena Page I

unnecessarily taxing the Court's resources. Contrary to Google's uninformed assertions, Visto

cooperate.

A. The Underlying Lawsuit.

Corporation, C.A. No. 2-06-CV -181- TJW(CE), United States District Court for the Eastern

RIM's access to Google email, but Visto does not know what that software is. Furthermore,

II. FACTUAL BACKGROUND

In short, because the subpoenaed information is relevant and uniquely in Google's

On April 28, 2006, Visto filed its Original Complaint for Patent Infringement against

requested information. For example, RIM does not know the country of location of Google's

has sought the requested information from RIM. However, RIM does not readily have the

more firewalls. Nor can RIM identify with certainty the software and processes that Google

email server computers, and RIM cannot confirm that Google' s email servers are behind one or

Google is uniquely positioned to identify the quantity of Google email accounts accessed

employs for allowing services such as RIM's to interface with Google email (known as

through RIM's services on a daily basis. If Google would have cooperated with Visto, it is likely

other third parties. Visto remains willing to work with Google to this end if Google is willing to

that a declaration from Google would have provided the needed discovery, as was done with the

Research in Motion Limited and Research in Motion Corporation (collectively, "RIM") in the

"Gmail"). In fact, Visto understands that Google has implemented custom software to support

compelling Google to produce a witness for deposition and responsive documents.

possession, this Court should deny Google's motion to quash and should instead issue an order

District of Texas, Marshall Division (the "Lawsuit"). (Declaration of Martin C. Robson

case styled as Vista Corporation. v. Research in Motion Limited and Research in Motion

2

345678910'"

•• 11'"

~~ 12

~ .~~a 13

- i::: :!:rIJ_ ••..•f . 141:~9 I: -~8~\,)01= 15

~~=:;;'" 16

'" ..=:.~

17

1819202122232425262728

Memorandum of Points and Authorities in Support of Vis to's Opposition to Google'sMotion to Quash Subpoena, or in the Alternative for Protective Order, and Visto's

Cross-Motion to Compel Google to Comply with Third-Party Subpoena Page 2n"II"< ')<;')Q,OVh

("Robson Decl."), Ex. A). In the Lawsuit, Visto alleges that RIM is infringing U.S. Patents Nos.

Ex. B, at 7-8).

email related information between Google and RIM; and (7) the integration of emai1 software

server and a RIM product; (3) the design, development, function, operation, and/or location of

(Robson Decl.,

In written discovery in the Lawsuit, Visto served an interrogatory requesting RIM to

After receiving RIM's interrogatory responses, Visto served subpoenas to the third

B. RIM Tells Visto That Certain Accused Instrumentalities Are Supported ByGoogle's Email Services.

Among other things, these patents relate to technology that enables remote access to business

information such as email using smart phones such as BlackBerries.

6,085,192; 6,151,606; 6,708,221; 6,023,708; and 7,039,679 (collectively, the "patents-in-suit").

identify all RIM products that support over-the-air synchronization of emails. In response, RIM

C. Visto Serves Subpoena on Google.

parties identified in RIM's discovery responses. Visto served its subpoena for documents and

6, 2008. (Robson Decl., Ex. C). In its subpoena, Visto requested the production of documents

deposition on certain topics related to RIM's BlackBerry Internet Service on Google on February

relating to: (1) the location of servers used by Google to provide emai1 services to its customers;

Google; (5) the notification and/or polling protocols used by Google to inform an external

(2) the number of Google users that synchronize email related information between a Google

server and "aRIM product; (4) any software and/or hardware provided by RIM for installation at

software and hardware provided by Google to synchronize email applications between a Google

application of changes to a user's emai1; (6) communications protocols used for transmitting

2

345678910'"

•.. 11~

!S

~12.

~~~13

: ...'" :srIJ_•• a: . 14=-S = -~d .•\,I"~•• ~= 15""'z =;'" 16

~S~~

17

1819202122232425262728

Memorandum of Points and Authorities in Support of Visto's Opposition to Google's

Motion to Quash Subpoena, or in the Alternative for Protective Order, and Visto'sCross-Motion to Compel Google to Comply with Third-Party Subpoenanolb< ?,?Qll1v!;

Page 3

offered by Goog1e with services or software provided by RIM. (ld. at 6). The subpoena also

D. Google Refuses to Comply with the Subpoenas.

services. (ld. at 7-8).

the matter without Court involvement, Google served its objections to the document requests in

seeks a deposition of a Goog1e corporate representative on topics relating to the document

In an effort to secure compliance with the original subpoena, counsel for Visto conferred

In compliance with Local Rule 37-2, Visto sets forth its document requests below:

3. All Documents relating to the design, development, function, operation, and/orlocation of software and/or hardware provided by Google to synchronize e-mail,

2. Documents sufficient to identify the total number of Google users thatsynchronize e-mail, calendar, contact, address book, task, and/or memo relatedinformation between a Goog1e server and a BlackBerry enabled device.

1. Documents sufficient to identify the location of servers used by Google toprovide e-mail, folder, calendar, contact, address book, task, and/or memo relatedservices to users.

requests and Google's use and integration of RIM's BlackBerry Internet Service in its email

. 1refuse to comply with the subpoenas.

with counsel for Google regarding the scope of the subpoena and the information sought. At

Google's request, Visto granted an extension of time to respond to the subpoena. Visto also

deposition for March 17, 2008. (Robson Decl., Ex. D). Despite Visto's best efforts to resolve

the original subpoena and moved to quash the deposition noticed in the amended subpoena .

agreed to reschedule the noticed deposition and reissued an amended subpoena noticing the

(Robson Decl., Ex. E). To date, out of all the third parties subpoenaed, Google is the only one to

1 The other third parties, Yahoo, AOL and Microsoft, were served nearly identical subpoenasseeking the same type of information currently sought from Google. Each of the third partiescooperated with Visto and submitted stipulations or declarations addressing the informationsought by Visto. Final agreements have been reached with Microsoft and AOL, and Vistoexpects to reach a similar agreement with Yahoo in the near future, in an expeditious andefficient manner without the need of depositions or motion practice.

2

345678910'"

... 11••

::;

~ 12~ .

~~~

13= !:

~~•• = • 14=~S = -~~ ..\oI"~-~= 15~~ =:;.'" 16••

'"===~

17

1819202122232425262728

Memorandum of Points and Authorities in Support of Visto's Opposition to Google's

Motion to Quash Subpoena, or in the Alternative for Protective Order, and Visto's

Cross-Motion to Compel Google to Comply with Third-Party SubpoenaDallas 252930v6

Page 4

(Robson Decl., Ex. C).

2

345678910'I>

••• 11"' l:==

~ 12. = l:•• ='1> 13.. ~~ ::l~w

~i~14

= ::= -~8••.•= 15

-~ ~z=;;'I> 16"'

:..===:.~ 17

1819202122232425262728

folder, calendar, contact, address book, task, and/or memo related informationbetween a Google server and a BlackBerry enabled device.

4. All Documents relating to any software and/or hardware provided by RIM forinstallation at Google.

5. All Documents relating to the notification and/or polling protocols used byGoogle to inform an external application of changes to a user's e-mail, folders,calendar, contacts, address book, tasks, and or memos.

6. All Documents relating to communications protocols used for transmitting e­mail, folder, calendar, contact, address book, task, and or memo relatedinformation between Google and RIM.

7. All Documents relating to the integration of e-mail, folder, calendar, contact,address book, task, and or memo related services offered by Google with RIM'sBlackBerry Internet Service (or BlackBerry Web Client) and/or other services orsoftware provided by RIM.

Google's objections to Visto's document requests are repeated verbatim as follows:

A. General Objections (applicable to every request): Google objections to eachrequest to the extent it calls for documents that are protected by the attorney-clientprivilege, work product doctrine, or any other applicable privilege or immunity.Google further objects to each request to the extent it calls for confidential,proprietary or trade secret information. Google objects to each request" to theextent it calls for evidence that is neither relevant nor reasonably calculated tolead to the discovery of relevant evidence.

B. Requests Nos. 2-8: Google objects to each of these requests on grounds that itis improper to burden a third party with discovery when the same information isequally or more readily available to a party to the litigation, specificallydefendants Research In Motion Limited and Research In Motion Corporation(collectively, "RIM"), and there is discovery pending against that party. It isGoogle's understanding, from conversations with you, that you have not yetsought or received discovery from RIM before seeking the same information fromGoogle.

C. Request No.1: Google objects to this request on grounds that it calls forhighly confidential information. Google further objects to this request on groundsthat it is overbroad in that it calls for the specific location of Google servers,which could not possibly have any relevance to your litigation. As we advisedyou, we can confirm that Google has servers both within the United States and inother countries.

D. Request No.2: Google objects to this request on grounds that it is overbroadand unduly burdensome, particularly where the information is equally or moreavailable to a party. Google does not have ready access to the number of Googleusers that synchronize information between Google servers and BlackBerrydevices.

Memorandum of Points and Authorities in Support of Visto's Opposition to Google's

Motion to Quash Subpoena, or in the Alternative for Protective Order, and Visto'sCross-Motion to Compel Google to Comply with Third-Party SubpoenaDallas 252930v6

Page 5

2

345678910'"

•• 11~ l:==

E 12~ .= ~

~=~

13=!: .~~-tri: 14i==~

~8~••.• = 15-~

""7-=~'" 16~

'"

~-~ 17

1819202122232425262728

E. Request No.3: Goog1e objects to this request on grounds that it is overbroadand unduly burdensome. Google further objects on grounds this request calls forinformation that is neither relevant nor reasonably calculated to lead to thediscovery of relevant evidence.

F. Request Nos. 4: Google objects to this request on grounds that it is overbroadand unduly burdensome.

G. Request No.5: Google objects to this request on grounds that it is vague andambiguous as to the meaning of "notification and/or polling protocols." Googlefurther objects to this request on grounds that it is overbroad and undulyburdensome to the extent it calls for "notification and/or polling protocols" for"external applications" other than those produced by RIM.

H. Request No.6: Google objects to this request on grounds that it is vague andambiguous as to the meaning of "communications protocols." Google furtherobjects to this request on grounds that it is overbroad and unduly burdensome.

1. Request No.7: Google objects to this request on grounds that it is overbroadand unduly burdensome. Google will consider responding to a suitably narrowedrequest, to the extent such request identifies the specific information sought andseeks information not available from a party to the above-captioned litigation.

(Robson Dec!., Ex. E) .

III. ARGUMENT

In deciding whether to compel document production and deposition testimony pursuant

to a subpoena, courts must balance the "relevance of the discovery sought, the requesting party's

need, and the potential hardship to the party subject to the subpoena." Heat and Control Inc. v.

Hester Indus., 785 F.2d 1017, 1024 (Fed. Cir. 1986); Del Campo v. Kennedy, 236 F.R.D. 454,

458 (N.D. Ca!. 2006). As explained below, this Court should compel Google to produce the

requested documents and make a corporate representative available for deposition because: (1)

the requested documents are relevant to the Lawsuit; (2) the requested information is uniquely in

the possession of Google; (3) there is de minimis, if any, potential hardship to Google if the

requested documents are produced; and (4) Google's objections to producing the requested

information are unfounded.

Memorandum of Points and Authorities in Support of Visto's Opposition to Google's

Motion to Quash Subpoena, or in the Alternative for Protective Order, and Visto's

Cross-Motion to Compel Google to Comply with Third-Party SubpoenaDallas 252930v6

Page 6